DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Preliminary amendment filed 18 May 2023 is acknowledged. Claims 1-20 have been canceled. Claims 21-40 have been added. Claims 21-40 are pending.
Election/Restrictions
Applicant’s election without traverse of group II, claims 31-40, in the reply filed on 18 December 2025 is acknowledged.
Claims 21-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 18 December 2025.
Information Disclosure Statement
Information disclosure statement filed 21 March 2023 has been partially considered.
Examiner notes that a copy of the cited WO2012-145247 reference cannot be found in the file wrapper of the instant application or any of the parent applications. Accordingly, this reference has not been considered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 42 described in at least para. [0057]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 26 shown in FIG. 3(b). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-8, 11, 12, 14, and 16-18 of U.S. Patent No. 11,561,192. Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to claim 31, U.S. Patent No. 11,561,192 claims a medical sensor as claimed, comprising:
a sensor element (“a sensor”) comprising a graphene layer (“a graphene layer”) (claim 1, clauses 1 and 5; claim 11, clauses 2 and 6); and
a layer of molecules (“a layer of molecules”) attached to the grapheme layer via pi-pi interactions (claim 1, clause 6; claim 11, clause 7),
wherein capacitance of the sensor element changes in response to exposure of the sensor element to a sample (claim 1, clause 7; claim 11, clause 8).
With respect to claim 32, U.S. Patent No. 11,561,192 claims wherein the graphene sensor element further comprises a dielectric layer (“dielectric layer”) under the graphene layer (claim 1, clauses 3-5; claim 11, clauses 4-6).
With respect to claim 33, U.S. Patent No. 11,561,192 claims wherein the graphene sensor element further comprises an insulator layer (“insulator layer”) under the dielectric layer (claim 1, clauses 3-5; claim 11, clauses 4-6).
With respect to claim 34, U.S. Patent No. 11,561,192 claims wherein the graphene sensor element further comprises a gate electrode (“gate electrode”) between the insulator layer and the dielectric layer, wherein the gate electrode is a multi-finger structure comprising at least two gate electrode fingers (claims 6 and 16).
With respect to claim 35, U.S. Patent No. 11,561,192 claims wherein capacitance of the graphene layer changes in response to collection of electrons in the graphene layer upon exposure to the sample (claim 1, clause 7; claim 11, clause 8).
With respect to claim 36, U.S. Patent No. 11,561,192 claims wherein the graphene sensor element is a graphene quantum capacitance varactor (claim 1, clause 2; claim 11, clause 3).
With respect to claim 37, U.S. Patent No. 11,561,192 claims further comprising a readout circuit (“a readout circuit”) responsive to the capacitance of the graphene layer and configured to output a signal indicative of the electrical charge (claims 4 and 14).
With respect to claim 38, U.S. Patent No. 11,561,192 claims wherein the sensor element has an equivalent oxide thickness (EOT) of less than about 5 nanometers (nm) (claims 7 and 17).
With respect to claim 39, U.S. Patent No. 11,561,192 claims wherein the sensor element has a capacitance modulation ratio of greater than about 1.2 (claims 8 and 18).
With respect to claim 40, U.S. Patent No. 11,561,192 claims wherein molecules of the layer of molecules comprise a pyrene group (claims 2 and 12).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 31, 32, 35, 36, and 38-40 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee et al. (US Patent Application Publication 2012/0220053, hereinafter Lee ‘053) in view of Long et al. (US Patent Application Publication 2012/0058350, hereinafter Long ‘350).
With respect to claim 31, Lee ‘053 teaches (FIG. 2C) a medical sensor substantially as claimed, comprising:
a sensor element (101) comprising a graphene layer (108) ([0027, 0029]); and
a layer of molecules (109) attached to the grapheme layer (108) via pi-pi interactions ([0031]).
Thus, Lee ‘053 is shown to teach all the features of the claim with the exception of wherein capacitance of the sensor element changes in response to exposure of the sensor element to a sample.
However, Long ‘350 teaches (FIG. 10) monitoring changes in capacitance of a graphene-based sensor in response to exposure of the sensor element (1) to a sample (12) to sense target moieties ([0088]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed capacitance of the sensor element of Lee ‘053 changing in response to exposure of the sensor element to a sample as taught by Long ‘350 to sense target moieties.
With respect to claim 32, Lee ‘350 teaches wherein the graphene sensor element further comprises a dielectric layer (102) under the graphene layer (108) ([0027]).
With respect to claim 35, Lee ‘053 and Long ‘350 teach the device as described in claim 31 above, but primary reference Lee ‘053 does not explicitly teach the additional limitation wherein capacitance of the graphene layer changes in response to collection of electrons in the graphene layer upon exposure to the sample.
However, Long ‘350 teaches (FIG. 10) monitoring changes in capacitance of a graphene-based sensor in response to collection of electrons in the graphene layer (1) upon exposure to the sample (12) to sense target moieties ([0088]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed capacitance of the graphene layer of Lee ‘053 and Long ‘350 changing in response to collection of electrons in the graphene layer upon exposure to the sample as taught by Long ‘350 to sense target moieties.
With respect to claim 36, Lee ‘053 and Long ‘350 teach the device as described in claim 31 above, but primary reference Lee ‘053 does not explicitly teach the additional limitation wherein the graphene sensor element is a graphene quantum capacitance varactor.
However, Lee ‘053 teaches a graphene sensor (101) ([0027]) to detect different biomarkers in a sensitive and selective manner ([0057]). Further, Long ‘350 teaches (FIG. 10) monitoring changes in capacitance of a graphene-based sensor in response to exposure of the sensor element (1) to a sample (12) to sense target moieties ([0088]). In combination, Lee ‘053 and Long ‘350 teach a graphene quantum capacitance varactor because Lee ‘053 and Long ‘350 teach all the elements of the claim.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed the graphene sensor element of Lee ‘053 and Long ‘350 as a graphene quantum capacitance varactor as taught by Lee ‘053 and Long ‘350 to detect different biomarkers in a sensitive and selective manner and/or to sense target moieties.
With respect to claims 38 and 39, Lee ‘053 teaches wherein the sensor element (101) has an equivalent oxide thickness (EOT) of less than about 5 nanometers (nm) ([0029, 0031]); and wherein the sensor element (101) has a capacitance modulation ratio of greater than about 1.2 ([0029, 0031]).
It is noted that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, claimed properties or functions are presumed to be inherent. In re Best, 195 USPQ 430, 433 (CCPA 1977). It has also been held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 15 USQP2d 1655, 1658 (Fed. Cir. 1990). In this case, the sensor element of Lee ‘053 would inherently have the properties of an equivalent oxide thickness (EOT) of less than about 5 nanometers (nm) and a capacitance modulation ratio of greater than about 1.2 because the sensor element is made of graphene having a layer of pyrene group molecules attached thereto, which is the same as the sensor element as disclosed.
With respect to claim 40, Lee ‘053 teaches wherein molecules of the layer of molecules (109) comprise a pyrene group ([0031]).
Claim 33 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee ‘053 and Long ‘350 as applied to claim 32 above, and further in view of Kobayashi (US Patent Application Publication 2011/0057168, hereinafter Kobayashi ‘168).
With respect to claim 33, Lee ‘053 and Long ‘350 teach the device as described in claim 32 above with the exception of the additional limitation wherein the graphene sensor element further comprises an insulator layer under the dielectric layer.
However, Kobayashi ‘168 teaches (FIG. 1B) a graphene sensor element comprising an insulator layer (12) under a dielectric layer (15) ([0085, 0087]) in an arrangement that suppresses variation of electrical resistance values of the sensing layer provided between the electrodes ([0018]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed the graphene sensor element of Lee ‘053 and Long ‘350 further comprising an insulator layer under the dielectric layer as taught by Kobayashi ‘168 in an arrangement that suppresses variation of electrical resistance values of the sensing layer provided between the electrodes.
Claim 34 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee ‘053, Long ‘350, and Kobayashi ‘168 as applied to claim 33 above, and further in view of Kan et al. (US Patent Application Publication 2004/0256655, hereinafter Kan ‘655).
With respect to claim 34, Lee ‘053, Long ‘350, and Kobayashi ‘168 teach the device as described in claim 33 above, but primary reference Lee ‘053 does not explicitly teach the additional limitation wherein the graphene sensor element further comprises a gate electrode between the insulator layer and the dielectric layer, wherein the gate electrode is a multi-finger structure comprising at least two gate electrode fingers.
However, Kobayashi ‘168 teaches (FIG. 1B) a graphene sensor element comprising a gate electrode (14) between an insulator layer (12) and a dielectric layer (15) ([0085, 0087]) in an arrangement that suppresses variation of electrical resistance values of the sensing layer provided between the electrodes ([0018]).
Further, Kan ‘655 teaches (FIGs. 1 and 2) a sensor comprising a multi-finger gate electrode structure (120 or 210) comprising at least two gate electrode fingers (e.g. 130, 135, and 140; or 227-229) ([0018, 0025]) to provide selective receptivity ([0005]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed the graphene sensor element of Lee ‘053, Long ‘350, and Kobayashi ‘168 further comprising a gate electrode between the insulator layer and the dielectric layer as taught by Kobayashi ‘168 in an arrangement that suppresses variation of electrical resistance values of the sensing layer provided between the electrodes; and to have formed the gate electrode of Lee ‘053, Long ‘350, and Kobayashi ‘168 as a multi-finger structure comprising at least two gate electrode fingers as taught by Kan ‘655 to provide selective receptivity.
Claim 37 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee ‘053 and Long ‘350 as applied to claim 31 above, and further in view of Chou et al. (US Patent Application Publication 2006/0029994, hereafter Chou ‘994).
With respect to claim 37, Lee ‘053 and Long ‘350 teach the device as described in claim 31 above with the exception of the additional limitation further comprising a readout circuit responsive to the capacitance of the graphene layer and configured to output a signal indicative of the electrical charge.
However, Chou ‘994 teaches (FIG. 4) a readout circuit (36) to obtain a response from a biosensor (33) ([0038]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed the medical sensor of Lee ‘053 and Long ‘350 further comprising a readout circuit responsive to the capacitance of the graphene layer and configured to output a signal indicative of the electrical charge as taught by Chou ‘994 to obtain a response from the sensor.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christopher M. Roland whose telephone number is (571)270-1271. The examiner can normally be reached Monday-Friday, 10:00AM-7:00PM Eastern.
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/C.M.R./Examiner, Art Unit 2893
/YARA B GREEN/Supervisor Patent Examiner, Art Unit 2893